Faculty/Author Profile

Elizabeth A. Doherty, Ph.D.

McNeill Baur PLLC

Dublin, CA, USA

Liz Doherty has spent the past 14 years assisting clients in the life sciences with a wide range of US patent law issues. Since a patent strategy is part of an overall business strategy, Liz works closely with clients to align intellectual property and business goals. Liz conducts business in French as well as English. Liz has worked with many types of clients, from recent start-ups to large multinationals to research foundations to venture funds. The technologies on which she has focused include antibodies and other protein biologic drugs, diagnostic methods and biomarkers, omega-3 fatty acid pharmaceuticals, non-natural nucleic acids, genomic sequencing methods, immunohistochemistry, immunocytochemistry, and fluorescence in situ hybridization techniques, and bioinformatics.

Liz’s work focuses on helping clients to develop patent strategies for their research projects, conducting due diligence and freedom to operate analyses, and preparing legal opinions, as well as drafting new patent applications and prosecuting US patent application portfolios. She has also prepared inter partes review (IPR) petitions and assisted a patent owner successfully defend all of its patent claims in an inter partesreexamination before the US Patent and Trademark Office. Liz has spent several years working in Europe and has worked extensively with European patent attorneys, both as clients and as colleagues. As a benefit of her tenure in Europe, she has worked frequently with European patent attorneys to improve the drafting of new patent applications. Liz uses this experience to avoid common pitfalls that arise due to the differences in law and procedure between the US Patent and Trademark Office and the European Patent Office, and thus, to anticipate potential patent eligibility problems, reduce prosecution costs, and obtain a better scope of protection in both jurisdictions.

Coordinating patent and regulatory strategies for new drugs and biologics is also an important aspect of Liz’s work. For example, she has counseled clients on non-patent exclusivities and US patent term extensions, and has helped clients to list patents in the US Food and Drug Administration Orange Book. Liz has also worked on several United States patent litigations, including three Abbreviated New Drug Application (ANDA) litigations.

Prior to joining McNeill Baur, Liz spent 14 years at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, largely splitting her time between Finnegan’s California and European offices. Prior to that, she spent 9 years conducting basic science research at Yale University and the University of California at Irvine. Her PhD research at Yale focused on the three-dimensional structure of large RNA molecules and analysis of the tertiary interactions between nucleotides that underpin the complex architecture of these RNAs and that allow RNA enzymes to catalyze reactions.